Corephotonics, Ltd.

Patent Trials and Appeals Board

Sep 14, 2020

IPR2020-00487 (P.T.A.B. Sep. 14, 2020)

Trials@uspto.gov Paper 9
571-272-7822 Date: September 14, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APPLE INC.,
Petitioner,
v.
COREPHOTONICS, LTD.,
Patent Owner.

IPR2020-00487
Patent 9,661,233 B2

Before BRYAN F. MOORE, GREGG I. ANDERSON, and
MONICA S. ULLAGADDI, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

I. INTRODUCTION
Apple Inc. (“Petitioner”) filed a Petition to institute an inter partes
review of claims 1–18 (“the challenged claims”) of U.S. Patent No.
9,661,233 B2 (Ex. 1001, “the ’233 patent”). Paper 2 (“Pet.”).
Corephotonics, Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 6
(“Prelim. Resp.”).

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With the Board’s authorization, Petitioner filed a Reply (Paper 7,
“Prelim. Reply”) to Patent Owner’s Preliminary Response, and Patent
Owner thereafter filed a Sur-Reply (Paper 8, “Prelim. Sur-Reply”).
We have authority under 35 U.S.C. § 314, which provides that an
inter partes review may not be instituted unless the information presented in
the Petition shows “there is a reasonable likelihood that the petitioner would
prevail with respect to at least 1 of the claims challenged in the petition.” 35
U.S.C. § 314(a) (2018); see 37 C.F.R. 42.4(a) (2019). Based on the
information presented in the Petition and the supporting evidence, we do not
determine that there is a reasonable likelihood Petitioner would prevail with
respect to at least one of the challenged claims. Accordingly, we do not
institute an inter partes review of claims 1–18 on the grounds set forth in the
Petition.
II. BACKGROUND
A. Related Proceedings
Petitioner and Patent Owner identify the following corresponding
district court proceeding involving the ’233 patent: Corephotonics Ltd. v.
Apple Inc., Case No. 5:19-cv-04809 (N.D. Cal.). Pet. 2; Paper 5, 1.1
We identify the following related administrative matters, including
every application and patent claiming the benefit of the priority of the filing

1 Patent Owner cites Corephotonics, Ltd. v. Apple Inc., Case No. 3:19-cv-
04809-LHK (N.D. Cal.) (Paper 6, 1), but this case number appears to reflect
a typographical error. A PACER search of Case No. 5:19-cv-04809 reveals
that Patent Owner’s complaint in that case was erroneously identified as
“Civil Action No. 3:19-cv-4809” on its cover page.
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date of the ’233 patent. See Office Consolidated Trial Practice Guide2 at
18; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019):
U.S. Patent No. 9,185,291 B1 (IPR2018-01348, Institution Denied);
U.S. Patent No. 10,015,408 B2 (IPR2020-00488, Institution Denied),
(IPR2020-00489, Trial Instituted);
U.S. Patent No. 10,326,942 B2 (IPR2020-00860);
U.S. Patent No. 10,225,479 B2 (IPR2020-00905, IPR2020-00906);
U.S. App. No. 16/198,181; and
U.S. App. No. 16/368,222.
A. The ’233 Patent
The ’233 patent concerns a dual-aperture zoom digital camera that
operates in both still and video modes. Ex. 1001, code (57). The camera
includes a Wide sub-camera and a Tele sub-camera, each of which includes
a fixed focal length lens, an image sensor, and an image signal processor.
Id. at 3:30–33. Figure 1A, reproduced below, illustrates a dual-aperture
zoom imaging system, which is also referred to as a digital camera. Id. at
5:57–58, 6:14–17.

2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated
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Figure 1A shows a dual-aperture zoom imaging system. Id.
In still mode, the ’233 patent discloses performing zoom by either
fully or partially fusing Wide and Tele images, where a fused image includes
information from both Wide and Tele images. Id. at 3:42–45. In video
mode, however, the ’233 patent discloses performing optical zoom by
switching between Wide and Tele images—i.e., without fusion—in order “to
shorten computation time requirements, thus enabling high video rates.” Id.
at 3:49–52. The invention uses the Wide sub-camera output for a low zoom
factor (“ZF”) and the Tele sub-camera output for a high ZF. Id. at 11:8–24.
Typically, a user sees a jump, or discontinuous image change, when
the camera switches between sub-camera output images. Id. at 10:32–34.
The ’233 patent addresses this issue by employing a “smooth transition,”
which “is a transition between cameras or POVs that minimizes the jump
effect,” and which “may include matching the position, scale, brightness and
color of the output image before and after the transition.” Id. at 10:36–40.
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Although “an entire image position matching between the sub-camera
outputs is in many cases impossible, because parallax causes the position
shift to be dependent on the object distance,” a smooth transition may
achieve position matching “only in the [region of interest (“ROI”)] while
scale brightness and color are matched for the entire output image area.” Id.
at 10:40–46.
B. Challenged Claims
Petitioner challenges claims 1–18 of the ’233 patent. Claims 1 and 10
are independent. Independent claims 1 and 10 are reproduced below.
1. A multiple aperture zoom digital camera, comprising:
a) a Wide imaging section that includes a Wide sensor and
a fixed focal length Wide lens with a Wide field of view (POV),
the Wide imaging section operative to output a Wide image;
b) a Tele imaging section that includes a Tele sensor and
a fixed focal length Tele lens with a Tele POV that is narrower
than the Wide POV, the Tele imaging section operative to output
a Tele image; and
c) a camera controller operatively coupled to the Wide and
Tele imaging sections and configured to reduce an image jump
effect seen in video output images and to provide continuous
zoom video output images by executing registration between the
Wide and Tele images for performing position matching to the
video output images when switching from an output of the Tele
imaging section to an output of the Wide imaging section or vice
versa.
10. A method for providing video digital output in a multiple
aperture zoom digital camera, comprising steps of:
a) providing a Wide imaging section that includes a Wide
sensor and a fixed focal length Wide lens with a Wide field of
view (FOV), the Wide imaging section operative to output a
Wide image;
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b) providing a Tele imaging section that includes a Tele
sensor and a fixed focal length Tele lens with a Tele FOV that is
narrower than the Wide FOV, the Tele imaging section operative
to output a Tele image; and
c) utilizing a controller for reducing an image jump effect
seen in video output images and for providing continuous zoom
video output images, by executing, with the help of the
controller, registration between the Wide and Tele images for
performing position matching to the video output images when
switching from an output of the Tele imaging section to an output
of the Wide imaging section or vice versa.
Ex. 1001, 13:18–35; 14:12–29.
C. Asserted Ground of Unpatentability
Petitioner asserts that claims 1–18 would have been unpatentable as
follows. See Pet. 7.
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1–4, 7, 10–13, 16 103 Golan,3 Martin
5, 6, 14, 15 103 Golan, Martin,4 Ahiska5
8, 17 103 Golan, Martin, Levey6
9, 18 103 Golan, Martin, Parulski7
In support, Petitioner relies on the declaration of Dr. Frédo Durand
(Ex. 1003).

3 U.S. Patent Application Publication No. 2012/0026366 A1, published Feb.
2, 2012 (Ex. 1005, “Golan”).
4 U.S. Patent No. 8,081,206 B2, issued Dec. 20, 2011 (Ex. 1006, “Martin”).
5 U.S. Patent No. 7,990,422 B2, issued Aug. 2, 2011 (Ex. 1007, “Ahiska”).
6 U.S. Patent Application Publication No. 2012/0019704 (Ex. 1015,
“Levey”).
7 U.S. Patent No. 7,859,588 B2, issued Dec. 28, 2010 (Ex. 1008, “Parulski”).
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III. ANALYSIS
A. Principles of Law
A claim is unpatentable under 35 U.S.C. § 103 if the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). The burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp.
Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
burden of proof in an inter partes review). Furthermore, Petitioner cannot
satisfy its burden of proving obviousness by employing “mere conclusory
statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
Cir. 2016).
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B. Level of Ordinary Skill in the Art
Petitioner contends
[A] Person of Ordinary Skill in the Art (“POSITA”) at the time
of the claimed invention would have a bachelor’s or the
equivalent degree in electrical and/or computer engineering or a
related field and 2–3 years of experience in imaging systems
including optics and image processing.
Pet. 5. Petitioner supports its contention with the testimony of Dr. Durand.
Ex. 1003 ¶ 17. Patent Owner does not take a position as to the level of
ordinary skill in the art. See generally Prelim. Resp.
We determine, on the current record, that the level of ordinary skill in
the art proposed by Petitioner is consistent with that reflected in the ’233
patent and the asserted prior art. We adopt that level in deciding whether to
institute trial.
C. Claim Construction
We apply the same claim construction standard used by Article III
federal courts and the ITC, both of which follow Phillips v. AWH Corp., 415
F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R. §
42.100(b) (2019). Accordingly, we construe each challenged claim of the
’233 patent to generally have “the ordinary and customary meaning of such
claim as understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent.”
Petitioner proposes a construction for one limitation, as discussed in
further detail below. Pet. 6. Patent Owner does not take a position on claim
construction. See generally, Prelim. Resp.
“reduce an image jump effect seen in video output images”
Claim 1 recites “a camera controller operatively coupled to the Wide
and Tele imaging sections and configured to reduce an image jump effect
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seen in video output images.” Ex. 1001, 13:27–29. Claim 11 recites
“utilizing a controller for reducing an image jump effect seen in video output
images.” Id. at 14:22–23. Petitioner contends “a POSITA would have
understood ‘reduce an image jump effect seen in video output images’ to
mean “reduce a discontinuous image change in video output images.’” Pet.
6 (citing Ex. 1003 ¶¶ 41–43). Petitioner asserts the Specification supports
this proposed construction. Id. (citing Ex. 1001, 10:30–40).
We do not discern a dispute between the parties regarding this
limitation and we need not expressly construe this limitation to resolve the
controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
construe terms ‘that are in controversy, and only to the extent necessary to
resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
D. Obviousness over Golan and Martin
Petitioner contends claims 1–4, 7, 10–13, and 16 are unpatentable
under 35 U.S.C. § 103 over Golan and Martin. Pet. 13–53.
1. Overview of Golan (Ex. 1005)
Golan concerns a “method for continuous electronic zoom in a
computerized image acquisition system,” in which the system has “a wide
image acquisition device and a tele image acquisition device.” Ex. 1005,
code (57). By providing “multiple image devices each with a different fixed
field of view (FOV),” Golan’s system “facilitates a light weight electronic
zoom with a large lossless zooming range.” Id. ¶ 9. Golan’s Figure 1,
reproduced below, illustrates a zoom control sub-system for an image
acquisition system. Id. ¶ 26.
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Figure 1 of Golan illustrates a zoom control sub-system for an
image acquisition system. Id.

According to Golan, “[z]oom control sub-system 100 includes a tele
image sensor 110 coupled with a narrow lens 120 having a predesigned FOV
140, a wide image sensor 112 coupled with a wide lens 122 having a
predesigned FOV 142, a zoom control module 130 and an image sensor
selector 150.” Id. ¶ 37. Zoom control module 130 selects an appropriate
image sensor through image sensor selector 150 and calculates a camera
zoom factor when it receives a required zoom from an operator. Id. ¶ 39.
Golan’s system facilitates “continuous electronic zoom capabilities with
uninterrupted imaging,” which “is also maintained when switching back and
forth between adjacently disposed image sensors.” Id. ¶ 40.
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2. Overview of Martin (Ex. 1006)
Martin concerns a method for generating an autostereoscopic display
by aligning a first parallax image and at least one other parallax image.
Ex. 1006, code (57). By manipulating parallax images––two or more
images with overlapping visual fields but different points of view)––
Martin’s method creates a moving three-dimensional image without the use
of special viewing aids, i.e., an autostereoscopic display. Id. at 1:16–20;
3:32–1. Martin’s Figure 1, reproduced below, illustrates a method of
capturing parallax images. Id. at 3:41–51.

Figure 1 of Martin illustrates exemplary camera positions for
generating parallax images. Id. at 3:17–18.

According to Martin, “camera 10 may capture a first set of images and
[] camera 12 may capture a second set of images of [] common scene 14
while being displaced from one another. The resulting sets of images from
cameras 10 and 12 will be parallax images.” Id. at 3:42–46. Martin
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discloses generating a set of aligned parallax images by displaying
alternating views of two or more parallax images at a desired view rate and
manipulating the images such that at least a portion of the images are
aligned. Id. at 3:6–13. Figures 3a–3d, reproduced below, illustrate an
alignment process.

Figures 3a–3d of Martin illustrate a transformation process for
aligning parallax images. Id. at 3:20–22.

In Martin, “[t]he alignment matching process begins by selecting []
reference image 30, as shown in FIG. 3a, from a set of parallax images.
Once reference image 30 has been selected, other images 32, as shown in
FIG. 3b, from the parallax image set can be aligned to reference image 30.”
Id. at 4:39–43. “Reference image 30 may include region of interest 34.” Id.
at 4:51. “Unaligned image 32 may be manipulated, as shown in FIG. 3c, for
example, until region 34' matches alignment with region 34, as illustrated in
FIG. 3d.” Id. at 4:54–56.
Martin discloses that a computer may align the images using
convergence points in the images. Id. at 5:6–11. “The computer may
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further perform pattern matching or feature extraction algorithms . . . to
match alignment of regions of interest in the selected images at or near the
selected convergence points.” Id. at 5:11–21. The computer may
continuously adjust the transformation parameters to achieve “critical
alignment,” corresponding “to a condition where the degree of alignment is
sufficient to achieve a stable auto stereoscopic display. Stability of the
whole image may not be required, as long as at least a particular region of
interest in the auto stereoscopic display is stable.” Id. at 5:53–59. Martin
further discloses that the process may include “parallax image manipulations
of sub-pixel resolution to achieve critical alignment . . . where one image is
moved with respect to another image by an amount less than an integral
number of pixels.” Id. at 5:59–65.
3. Analysis of Independent Claim 1
Petitioner contends that Golan teaches “a zoom digital imaging
system with multiple imaging devices each defining an aperture for
capturing a digital image. Pet. 20 (citing Ex. 1005, code (54), ¶¶ 3, 9; Ex.
1003 ¶ 61). Specifically, Petitioner argues Golan’s Figure 1 discloses an
embodiment with “a zoom control sub-system 100, which includes ‘a tele
image sensor 110 coupled with a narrow lens 120 . . . a wide image sensor
112 coupled with a wide lens 122 . . . a zoom control module 130 and an
image sensor selector 150.’” Id. at 21 (quoting Ex. 1005 ¶¶ 37, 39) (citing
Ex. 1003 ¶ 62) (emphasis omitted). Petitioner argues that “[i]n Golan’s
image acquisition system, each of the Wide imaging device (including wide
image sensor 112 and wide lens 122) and the Tele imaging device (including
tele image sensor 110 and narrow lens 120) defines an aperture for
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generating a corresponding digital image.” Id. at 22 (citing Ex. 1005, Fig. 1;
Ex. 1003 ¶ 63).
According to Petitioner, Golan discloses “a Wide imaging section that
includes wide lens 122 (fixed focal length Wide lens) with FOV 142 (Wide
field of view FOV) and wide image sensor 112 (Wide sensor).” Id. at 22–23
(citing Ex. 1005 ¶¶ 36, 37, Fig. 1; Ex. 1003 ¶ 66). Petitioner asserts that
Golan’s wide lens 122 has a predesigned field of view that is fixed, and is
thus a fixed focal length lens. See id. at 23 (citing Ex. 1001, 7:3–5; Ex. 1003
¶¶ 67–72; Ex. 1005 ¶¶ 9, 36, 37, 43; Ex. 1017, Fig. 4.13, 48). Petitioner also
argues Golan discloses “a Tele imaging section that includes tele image
sensor 110 (Tele sensor) coupled with narrow lens 120 (a fixed focal length
Tele lens) having fixed FOV 140 (Tele FOV).” Id. at 24–25 (citing Ex.
1005, code (57), ¶¶ 36, 37, Fig.1; Ex. 1003 ¶ 76). Petitioner asserts that
Golan’s tele lens 120 has a predesigned field of view that is fixed, and is
thus a fixed focal length lens. See id. at 25 (citing Ex. 1003 ¶ 77; Ex. 1005
¶¶ 9, 36, 37, 43). Petitioner further argues that Golan discloses “that tele
FOV 140 is narrower than wide FOV 142,” by citing to Golan’s disclosure
that “[p]referably, wide FOV 142 is substantially wider than narrow FOV
140.” Id. (quoting Ex. 1005 ¶ 43) (citing Ex. 1003 ¶ 78; Ex. 1005 ¶¶ 9, 37,
Fig. 1). Petitioner further notes that “Golan teaches that zoom control sub-
system 100 includes a camera controller including zoom control circuit 130
coupled to the Wide and Tele imaging sections.” Pet. 26 (citing Ex. 1003
¶ 82).
With respect to the claimed features of “reduc[ing] an image jump
effect seen in video output images,” and “provid[ing] continuous zoom
video output images by executing registration between the Wide and Tele
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images for performing position matching to the video output images when
switching from an output of the Tele imaging section to an output of the
Wide imaging section or vice versa,” Petitioner presents the following
contentions. Id. at 28.
According to Petitioner, “Golan teaches a camera controller
‘configured to reduce an image jump effect seen in video output images and
to provide continuous zoom video output images…when switching from an
output of the Tele imaging section to an output of the Wide imaging section
or vice versa’ as recited in the claim using electronic calibration.” Id. (citing
Ex. 1003 ¶ 87). Petitioner specifically argues “Golan teaches performing
‘electronic calibration’ to ‘determine the alignment offsets between wide
image sensor array 110 and tele image sensor array 112,’ which ‘facilitates
continuous electronic zoom with uninterrupted imaging, when switching
back and forth between the first image sensor array and the second image
sensor array.’” Id. at 29 (quoting Ex. 1005 ¶¶ 15, 21) (citing Ex. 1005 ¶¶ 14,
15, 38, 45, 48; Ex. 1003 ¶ 89) (emphasis omitted).
Petitioner contends that “Martin teaches reducing an image jump
effect seen in video output images and providing stable video output images
‘by executing registration between [two images] for performing position
matching to the video output images when switching’ between those two
images as recited in the claim, by performing critical alignment when
switching between two parallax images in video output images.” Id. at 31
(citing Ex. 1003 ¶ 92). Specifically, Petitioner asserts that Martin’s Figure
3, reproduced as annotated below, illustrates registration between two
images. Id. at 32–33 (citing-in-part Ex. 1006, 4:51–59).
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Petitioner annotated version of Martin’s
Figures 3a–3d. Id. at 32.
Petitioner argues “that Martin’s critical alignment teaches determining
correspondences between the coordinate systems of the two images from
different points of view, which represent the registration between [] two
images,” thus “executing registration of two images.” Id. at 32–33 (citing
Ex. 1003 ¶ 96; Ex. 1006, 4:56–59, 5:10–50; Ex. 1009 ¶¶ 41, 42; Ex. 1013,
Figs. 2.4, 6.2, Tables 2.1, 6.1, 33–35, 273–77; Ex. 1016, 137). Petitioner
asserts that “registration between two images in critical alignment is used for
performing position matching to the video output images when switching
between the two images.” Id. at 33 (citing Ex. 1003 ¶ 97; Ex. 1006, 5:6–21,
7:36–51). Petitioner further asserts that a person of ordinary skill in the art
“would have understood that the critical alignment of Martin changes with
object distance of the ROI in a specific image, and that critical alignment is
performed when switching between each pair of parallax images.” Id.
(citing Ex. 1003 ¶ 97).
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Rationale for Combining Golan and Martin
Petitioner contends that a person of ordinary skill in the art would
have been motivated to apply Martin’s teachings to Golan “to produce the
obvious, beneficial, and predictable results of a stable transition between
images from different points of view for providing continuous zoom video
output images.” Pet. 17 (citing Ex. 1003 ¶¶ 54–59). Petitioner supports its
rationale with the following reasons.
First, that Golan and Martin “are analogous prior art and are in the
same field of endeavor pertaining to imaging systems generating video
output images using two imaging sections having different points of view.”
Id. (citing Ex. 1003 ¶ 55).
Second, that both Golan and Martin share an objective, that is, “a need
to provide continuous video output images when switching between images
from imaging sections having different points of view, for example, by using
alignments having sub-pixel accuracy.” Id. at 18 (citing Ex. 1003 ¶ 56); see
id. (citing Ex. 1005 ¶ 15; Ex. 1006, 5:51–55, 5:59–6:5).
Third, that
Golan’s expressed desire to achieve “continuous electronic zoom
with uninterrupted imaging, when switching back and forth
between the first image sensor array and the second image sensor
array” would have motivated a POSITA to incorporate Martin’s
teaching of executing registration using critical alignment of
region of interest in two images having different points of view
to calculate “transformation parameters of sub-pixel resolution”
for position matching to achieve a stable transition in the
continuous zoom video output images of the digital camera of
Golan. (APPL-1005), [0036]; (APPL-1006), 5:51-58; (APPL-
1003), ¶57. It was well known to a POSITA that, for seamless
transition between two images (e.g., from imaging sections
having different points of views and/or wider and narrower fields
of view) in zoom video, when a fixed calibration between the two
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imaging sections (e.g., electronic calibration of Golan) is not
sufficient alone (e.g., because calibrated alignments change),
registration of the two images (e.g., critical alignment of Martin)
is beneficial for accurate position matching to video output
images.
Pet. 18–19 (citing Ex. 1007, 4:58–62, 10:2–5 (“[i]f calibration between the
[wide-angle] master and slave cameras is insufficient alone, image
registration or matching can be carried out” “to transition between the
master view and the slave view as seamless as possible to create the quality
of a continuous zoom function.”); Ex. 1014, 1:63–2:1; Ex. 1019, 1059; Ex.
1009 ¶¶ 41, 42; Ex. 1003 ¶ 57).
Fourth, that “combining the teachings of Martin with the system of
Golan would have produced operable results that are predictable” and that
“combining Martin’s teachings of executing registration using critical
alignment . . . for position matching to achieve a stable transition in
continuous zoom video output images of the digital camera of Golan would
have been no more than the combination of known elements according to
known methods . . . .” Id. at 19–20 (citing Ex. 1003 ¶ 58). Petitioner
asserts that it “ . . . would have been obvious to a POSITA to achieve the
benefits of a stable transition in video output images described by Martin.”
Id. at 20.
Fifth, that “a POSITA would have understood that Martin’s teachings
of critical alignment apply to electronic camera systems providing
continuous zoom video output images as taught in Golan, regardless of
whether the position-matched images are switched to provide a three-
dimensional illusion as in Martin” because Golan and Martin have a “shared
goal.” Id. (citing Ex. 1003 ¶ 59).
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Patent Owner’s Contentions
Patent Owner contends “[t]he petition fails to demonstrate that a
POSITA would have looked to a patent directed to intentionally displaying
images with discontinuities, in order to provide an autostereoscopic effect, to
the fundamentally different problem of minimiz[ing] discontinuities to
approximate a mechanical zoom effect.” Prelim. Resp. 12. Patent Owner
asserts that Martin intentionally displays parallax artifacts from two different
images to create a three-dimensional image. See id. at 11–12. Patent Owner
contrasts Martin with the disclosure of the ’233 patent, which Patent Owner
characterizes as disclosing “minimiz[ing] discontinuities such as those that
result from parallax” and “remov[ing] parallax artifacts.” Id. at 10 (citing
Ex. 1001, 10:31–46, 12:61); see id. at 10–11 (quoting Ex. 1002, 314–315).
Additional Pre-Institution Briefing
Petitioner asserts that Patent Owner mischaracterizes Martin as
“fundamentally different” from the invention disclosed in the ’233 patent,
and that its mischaracterization is contradicted by record evidence. Prelim.
Reply 1. Petitioner asserts that “without evidence, Patent Owner
misrepresents Martin as ‘directed to intentionally displaying images with
discontinuities.’” Id. at 4 (citing Prelim. Resp. 9). According to Petitioner,
“Patent Owner misrepresents requirements of the ’233 Patent and teachings
of Martin, through pure attorney argument with no support.” Id. at 2.
Specifically, Petitioner asserts that “Patent Owner alleges that ‘in the
invention of the ’233 patent[,] parallax artifacts are undesirable effects,’ and
suggests that providing video output images with any parallax is
fundamentally different from the alleged invention of the ’233,” but that “the
’233 Patent does not require removing all parallax to reduce an image jump
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effect.” Id. at 3. Instead, Petitioner asserts that “removing all parallax for
all the objects by performing ‘an entire image position matching … is in
many cases impossible,’ and smooth transition is achieved by using position
matching ‘only in the ROI region.’” Id. (citing Ex. 1001, 10:36–46).
Patent Owner responds that “[i]t does not require an expert to explain
the difference between the goals and techniques of Martin” and that
Petitioner “made new arguments outside the scope of its petition.” Prelim.
Sur-Reply 1. Patent Owner further contends that Petitioner’s challenges fail
based on the merits. Id. at 4.
We are not persuaded that Patent Owner “mischaracterizes” the
teachings of Martin in its Preliminary Response––its characterization just
differs from that of Petitioner. We are also not persuaded that Patent Owner
“suggests that providing video output images with any parallax is
fundamentally different from the alleged invention of the ’233 Patent.” See
Prelim. Reply 3. We view this as Petitioner’s attempt to bring in the new
argument that the ’233 patent does not remove all parallaxes because it is, in
many cases, impossible, and that smooth transition is achieved by using
position matching only in the ROI region. See id. (citing Ex. 1001, 10:36–
46) (“Thus, as in Martin, the ’233 Patent reduces an image jump effect by
position matching ‘only in the ROI region,’ without removing all parallax in
the entire image” and “[u]ncorrected parallax outside the ROI therefore
cannot indicate that Martin is directed to a fundamentally different
problem.”).
This new argument, however, is inconsistent with Petitioner’s
argument that dependent claim 3 of the ’233 Patent “. . . provides that ‘the
position matching is performed in a region of interest.’” Id. at 4 (citing Ex.
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1001, 13:41–42). “[T]he presence of a dependent claim that adds a
particular limitation raises a presumption that the limitation in question is
not found in the independent claim.” Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 910 (Fed. Cir. 2004). Thus, based on claim differentiation,
position matching as recited in claim 1 encompasses something broader than
position matching performed in only an ROI as in claim 3.
Discussion
With respect to Petitioner’s first, second, and fifth reasons regarding
analogous art, similar objectives, and shared goals between the two
references, these reasons do not constitute sufficient rational underpinning to
support Petitioner’s rationale for combining Golan and Martin, in and of
themselves. As to analogous art, the determination that prior art is
analogous based on field of endeavor is alone not sufficient to show
a motivation to combine. Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034,
1051 (Fed. Cir. 2016) (finding that “concluding that the references are
within the scope and content of the prior art to be considered for obviousness
(i.e. analogous art) does not end the inquiry”––motivation to combine must
still be shown).
With respect to Petitioner’s third and fourth reasons, we determine
that Petitioner’s explanations constitute hindsight because they are not
sufficiently supported by the cited evidence. Petitioner argues that the
ordinarily skilled artisan would have been motivated “to incorporate
Martin’s teaching of executing registration using critical alignment of
region[s] of interest in two images having different points of view to
calculate ‘transformation parameters of sub-pixel resolution’ for position
matching to achieve a stable transition in the continuous zoom video output
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images of the digital camera of Golan.” Pet. 19 (citing Ex. 1005 ¶ 36; Ex.
1006, 5:51–58; Ex. 1003 ¶ 57) (emphasis added). Martin, however, does not
disclose a stable transition in all displays, but specifically in an
autostereoscopic display, in which “[c]ritical alignment corresponds to a
condition where the degree of alignment is sufficient to achieve a stable auto
stereoscopic display” and “[s]tability of the whole image may not be
required, as long as at least a particular region of interest in the auto
stereoscopic display is stable.” Ex. 1006, 5:53–58 (emphasis added).
Petitioner’s challenges do not explain what is meant by stability in the
context of an autostereoscopic display––does Martin’s disclosure of stability
relate to stably maintaining a parallax (i.e., to create autostereoscopic
display) or to stably eliminating or reducing a parallax?
Martin discloses that stability is directly proportional to the number of
parallax images with differing parallax positions. Ex. 1006, 4:47–50 (“the
stability of an autostereoscopic display consistent with the present invention
may increase as the number of parallax images with differing parallax
positions increases”). This supports the possibility that the term stability, as
disclosed in the context of Martin, may not refer to reducing or eliminating a
parallax but may instead refer to creating or maintaining one.
In light of the fact that parallax is required to create three-dimensional
images in Martin’s display, Petitioner has not sufficiently supported its
position that maintaining critical alignment to provide stable
autostereoscopic display as taught by Martin would have been understood to
help provide “seamless transition between two images (e.g., from imaging
sections having different points of views and/or wider and narrower fields of
view) in zoom video . . . .” See Pet. 19. It is unclear, in Petitioner’s
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challenge, as to what specifically would be stable in transitions between
images captured by Martin’s camera 10 and images captured by Martin’s
camera 12, only a specific ROI portion of an image, or the entire image?
Petitioner cites portions of Martin that lead us to question whether
Martin’s critical alignment reduces or eliminates parallax artifacts. See Pet.
40 (citing Ex. 1006, Figs. 3A–3D (aligning regions 34 and 34’), 4:37–38,
4:54–56, 5:6–21, 7:46–51; Ex. 1003 ¶ 114). Specifically, Martin discloses
that “[t]he region of interest may be all or part of the image to be aligned.”
Ex. 1006, 4:37–38. If the ROI to be aligned constitutes the entire image and
not a portion thereof, then it is not clear that reducing or eliminating a
parallax between entire images would be beneficial in the context of Martin–
–would doing so negatively affect or destroy autostereoscopic display?
Although Petitioner presents evidence, Ahiska (Ex. 1007) that tends to show
a relation between electronic calibration and registration for position
matching, there is insufficient evidence to support the rationale that Martin’s
critical alignment, disclosed in the context of autostereoscopic displays,
would achieve the stable, seamless, or continuous transition in continuous
zoom video output images, disclosed in the context of switching back and
forth between adjacently disposed image sensors (see Ex. 1005 ¶ 40), as
Petitioner contends. See Pet. 19, 34 (citing-in-part Ex. 1007, 4:58–62, 10:2–
5 (“[i]f calibration between the [wide-angle] master and slave cameras is
insufficient alone, image registration or matching can be carried out” “to
transition between the master view and the slave view as seamlessly as
possible to create the quality of a continuous zoom function.”)).
Dr. Durand does not further explain or shed more light on why one of
ordinary skill in the art would have even looked to Martin, specifically, for a
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teaching of position matching for reducing or eliminating a parallax when
Martin concerns an autostereoscopic display that relies on parallax images to
operate. His testimony substantially mirrors the arguments presented in the
Petition: “[i]t was well known in the art that for seamless transition between
two images of different points of views in continuous zoom video
applications,” “image registration of two images from two imaging sections
for position matching (e.g., critical alignment of Martin) may be used”
“when calibration between two cameras (e.g., the electronic calibration of
Golan) is not sufficient alone.” Ex. 1003 ¶ 57 (emphasis omitted). Like the
Petition, Dr. Durand cites Ahiska (Ex. 1007), in addition to other references,
to support his testimony. See id. (citing Ex. 1007, 4:58–62, 10:2–5; Ex.
1014, 1:63–2:1 (describing misalignment due to shock of dropping or
striking dual camera lens); Ex. 1019, 1059 (describing how extrinsic
calibration errors occur due to shock, vibration, thermal variation and
cycling); Ex. 1009 ¶¶ 41, 42 (explaining that registration between wide
image 204 and telephoto image 206 is an alternative to correspondences
preferably determined at the time of manufacturing).
Dr. Durand’s testimony that “a POSITA would have understood that
Martin’s teachings of critical alignment for stable transition between images
of different points of view apply to electronic camera systems providing
continuous zoom video output [i]mages as taught in Golan, regardless of
whether a three dimensional illusion is provided” is not supported by
sufficient evidence––the cited references do not support this proposition.
Orimoto (Ex. 1014) and Hansen (Ex. 1019) address how calibration errors
and misalignment occur. Border (Ex. 1009) addresses image registration as
an alternative to correspondence (i.e., calibration), and Ahiska discloses
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image registration or matching, when calibration is insufficient, to provide a
seamless transition between master and slave cameras. The cited references
do not sufficiently support the rationale that Martin’s critical alignment,
disclosed in the context of autostereoscopic displays, would achieve stable,
seamless, or continuous transition in continuous zoom video output images,
as Petitioner contends.
Because Petitioner’s reasons for combining Golan and Martin are not
supported by sufficient evidence, Petitioner relies on hindsight for its
analysis. This is in contravention of the language of 35 U.S.C. § 103, which
provides that a patent may not be obtained when the “differences between
the subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” The Federal Circuit explained the meaning of “as a
whole”:
[I]n making the assessment of differences between the prior art
and the claimed subject matter, [S]ection 103 specifically
requires consideration of the claimed invention “as a whole.”
Inventions typically are new combinations of existing principles
or features. The “as a whole” instruction in title 35 prevents
evaluation of the invention part by part. Without this important
requirement, an obviousness assessment might successfully
break an invention into its component parts, then find a prior art
reference corresponding to each component. This line of
reasoning would import hindsight into the obviousness
determination by using the invention as a roadmap to find its
prior art components.
Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1337
(Fed. Cir. 2005) (internal citations omitted). Considering the Federal
Circuit’s guidance to consider the prior art as a whole, we determine that the
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ordinarily skilled artisan would never have picked up Martin in the first
place, let alone picked out a small part of Martin teaching critical alignment
between ROIs that may not even support the given rationales, i.e., support
the rationale of continuous, seamless, or stable transition between video
output images as disclosed by Golan, particularly when significant portions
of Martin disclose using parallax images.
For these reasons, we determine that Petitioner’s rationale for
combining Golan and Martin is not sufficiently supported by a rational
underpinning. See KSR, 550 at 418. Accordingly, we are not persuaded that
Petitioner sufficiently demonstrates a reasonable likelihood of prevailing
with respect to its burden to show unpatentability of claim 1 over the
combination of Golan and Martin.
4. Analysis of Independent Claim 10 and Dependent Claims 2–9 and 11–18
Independent claim 10 recites, inter alia, “[a] method for providing
video digital output in a multiple aperture zoom digital camera, comprising
the steps of.” Ex. 1001, 14:12–13. Independent claim 10 also recites
limitations similar to independent claim 1. See id. at 14:14–29. Petitioner
relies on Golan and Martin in the same manner as discussed above with
respect to the challenge of claim 1. See id. at 50–52. Accordingly, the
analysis in the preceding sections is substantially applicable to the challenge
to claim 10 over Golan and Martin.
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The same analysis is substantially applicable to the challenge to
dependent claims 2–9 and 11–18 because none of Ahiska8, Levey, and
Parulski cure the deficiencies of the combination of Golan and Martin.
IV. DISCRETION
Petitioner contends that “[a]lthough Golan was applied during
prosecution,” the Board should decline to exercise its discretion under 35
U.S.C. § 325(d) because Becton-Dickinson factors weigh in favor of
institution as follows. Pet. 8. Patent Owner does not address discretionary
denial. See generally, Prelim. Resp. As we decline to institute trial in the
present proceeding based on substantive grounds, we need not determine
whether to exercise our discretion under 35 U.S.C. § 325(d).
V. CONCLUSION
For the foregoing reasons, we conclude that the information presented
in the Petition does not demonstrate a reasonable likelihood of prevailing
with respect to establishing that at least one claim of the ’233 patent is
unpatentable. Accordingly, we do not institute inter partes review of all
challenged claims and all grounds presented in the Petition. See PGS
Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (indicating
that a decision whether to institute an inter partes review “require[s] a
simple yes-or-no institution choice respecting a petition, embracing all
challenges included in the petition”); Guidance on the Impact of SAS on AIA
Trial Proceedings (April 26, 2018). In summary:

8 Although Ahiska was cited as evidence in support of Petitioner’s
challenges to independent claims 1 and 10 based on Golan and Martin, it
was not cited as part of the challenge to these claims.
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Claim(s)
Challenged
35
U.S.C. §
Reference(s)/Basis Reasonable
Likelihood
Established
for Claims
Reasonable
Likelihood
Not
Established
for Claims
1–4, 7, 10–
13, 16 103 Golan, Martin
1–4, 7, 10–
13, 16
5, 6, 14, 15 103 Golan, Martin, Ahiska 5, 6, 14, 15
8, 17 103 Golan, Martin, Levey 8, 17
9, 18 103 Golan, Martin, Parulski 9, 18
Overall
Outcome 1–18

VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that an inter partes review is not instituted in this
proceeding.

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FOR PETITIONER:
David W. O’Brien
Andrew S. Ehmke
Hong Shi
HAYNES AND BOONE, LLP
david.obrien.ipr@haynesboone.com
andy.ehmke.ipr@haynesboone.com
hong.shi.ipr@haynesboone.com
FOR PATENT OWNER:
Neil A. Rubin
C. Jay Chung
RUSS AUGUST & KABAT
nrubin@raklaw.com
jchung@raklaw.com